On January 7, 2015, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Optical Disc Drives, Components Thereof, and Products Containing the Same (Investigation No. 337-TA-897).

By way of background, the investigation is based on a September 3, 2013 complaint filed by Complainant Optical Devices, LLC ("Optical") alleging violation of Section 337 in the importation and/or sale of certain optical disc drives, components thereof, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,904,007; 7,196,979; 8,416,651; RE40,927; RE42,913; and RE43,681.  See our September 6, 2013 and October 23, 2013 posts for more details on the complaint and Notice of Investigation, respectively. 

On October 20, 2014, ALJ Dee Lord issued an Initial Determination ("ID") granting Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Lenovo, LG Electronics, Inc., LG Electronics U.S.A., Inc., Nintendo, Panasonic, Toshiba Corporation, Toshiba America Information Systems, Inc., MediaTek, Inc., and MediaTek USA, Inc.'s (collectively, "Respondents") motion to terminate the investigation for good cause based on Optical's lack of prudential standing to bring an infringement action with respect to the asserted patents.  Specifically, ALJ Lord found that Optical does not hold all substantial rights to the asserted patents and therefore lacks prudential standing to maintain an action for infringement without joinder of other necessary parties.  See our December 22, 2014 post for more details on the ID.  On October 28, 2014, Optical petitioned the Commission for review of the ID, arguing that the ALJ erred in law and fact and contravened Commission policy.

According to the heavily redacted opinion, the Commission vacated the ALJ's finding that Optical lacks standing with respect to the '007, '979 and '651 patents (collectively, "the Kadlec patents") and remanded the investigation for further proceedings.  Specifically, the Commission found that the evidence addressed by the ALJ in the ID did not pertain to whether any other party has any control over how Optical litigates or licenses the Kadlec patents, to whether any other party has any security interests in the Kadlec patents, or to any other limits on the right to assign Optical's interest in the Kadlec patents.  The Commission also noted that, even assuming that Optical did not have standing, the ID does not sufficiently analyze which party would have to be joined.  On remand, the Commission left it to ALJ Lord's discretion as to whether to permit further proceedings on standing with respect to the Kadlec patents.  The Commission also found that, based on modified reasoning, Optical lacks standing with respect to the '927, '913 and '681 patents (collectively, "the Wild patents"), and that it would prejudice Respondents to allow Optical to join the necessary parties at this late stage of the investigation.  Specifically, the Commission found that the evidenced showed that Optical's position as the nominal assignee is insufficient to grant it the right to sue on the Wild patents as of the date of the complaint, and that the presumption that Optical is the true assignee was successfully rebutted.